DCT
2:21-cv-00445
Miller Mendel Inc v. City Of Anna Texas
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Miller Mendel, Inc. (Washington)
- Defendant: City of Anna, Texas (Texas) and Anna police Department (Texas)
- Plaintiff’s Counsel: Capshaw DeRieux, LLP; Rylander & Associates PC
- Case Identification: 2:21-cv-00445, E.D. Tex., 02/22/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the judicial district, has committed and is committing acts of infringement in the district, and has a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s use of the Guardian Platform, a software service for managing pre-employment background checks, infringes a patent related to an automated system for conducting such investigations.
- Technical Context: The technology concerns web-based software systems designed to digitize and streamline the traditionally paper-intensive and time-consuming process of conducting background investigations, particularly for law enforcement agencies.
- Key Procedural History: The complaint notes that Plaintiff markets its own product, the eSOPH system, which is allegedly covered by the patent-in-suit and directly competes with the accused platform. No other significant procedural events are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-06 | ’188 Patent Priority Date |
| 2018-08-07 | ’188 Patent Issue Date |
| 2020-01-01 | Alleged Infringement Start Date (approx.) |
| 2022-02-22 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,043,188 - "Background Investigation Management Service"
- Patent Identification: U.S. Patent No. 10,043,188, "Background Investigation Management Service," issued August 7, 2018.
The Invention Explained
- Problem Addressed: The patent’s background section describes pre-employment background investigations, particularly in law enforcement, as a manually intensive process, typically requiring 40 hours per applicant and involving large paper-based packets of personal information that investigators must manually verify by contacting numerous third parties (e.g., employers, references) (’188 Patent, col. 1:19-41).
- The Patented Solution: The invention is a web-based software system that automates and manages this process (’188 Patent, Abstract). The system allows an organization to create and send customized electronic documents to an applicant, who then completes them online. The system is further designed to process the applicant’s responses, such as lists of references, and then automatically generate and transmit corresponding electronic questionnaires to those references, thereby streamlining the data collection process (’188 Patent, col. 4:1-31; Fig. 1).
- Technical Importance: The described system sought to replace a cumbersome, paper-based workflow with an efficient, electronic one, thereby saving time and resources for organizations conducting in-depth background checks (’188 Patent, col. 1:38-41).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, and 15 (Compl. ¶12).
- Independent Claim 1, a method claim, includes the following essential elements:
- receiving a first set of program data identifying an applicant, position, organization, and investigator;
- storing a new applicant entry in system memory associated with the first data set;
- transmitting a hyperlink to the applicant's email for viewing an applicant set of electronic documents;
- receiving an applicant's electronic response containing a reference set of program data, which includes information about a reference source (a person), including a reference email address;
- determining a reference class of the reference source based on the reference data;
- selecting a reference set of electronic documents based on the determined reference class;
- transmitting a reference hyperlink to the reference source's email address for viewing the reference documents;
- receiving an electronic response from the reference source;
- storing the reference's electronic response in system memory and associating it with the applicant entry; and
- generating a suggested reference list of one or more law enforcement agencies based on an applicant's residential address.
III. The Accused Instrumentality
Product Identification
- The Guardian Alliance Technologies investigation software platform ("the Guardian Platform") (Compl. ¶12).
Functionality and Market Context
- The complaint alleges the Guardian Platform is an investigation software platform used by the Defendant's police department to conduct background investigations of applicants (Compl. ¶12).
- The infringement allegations consist of asserting that the Defendant's use of the Guardian Platform performs the specific sequence of steps recited in Claim 1 of the ’188 Patent (Compl. ¶12). No probative visual evidence provided in complaint.
- The complaint alleges that the Guardian Platform directly competes with the Plaintiff's own eSOPH software system, which Plaintiff states is covered by the ’188 Patent (Compl. ¶9, ¶15).
IV. Analysis of Infringement Allegations
’188 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a first set of program data comprising information identifying the applicant, the position, the organization, and the investigator; | Using the Guardian Platform on a computing device to receive initial data about an applicant, the position, the agency, and the investigator. | ¶12 | col. 15:56-60 |
| storing a new applicant entry in the system memory, the new applicant entry associated with the first set of program data; | Storing the initial applicant data as a new entry within the Guardian Platform's memory. | ¶12 | col. 15:61-64 |
| transmitting an applicant hyperlink to an applicant email address associated with the applicant, the applicant hyperlink for viewing an applicant set of electronic documents; | Transmitting a hyperlink via email to the applicant, allowing them to access electronic documents. | ¶12 | col. 15:65-16:3 |
| receiving an applicant electronic response with a reference set of program data, wherein the reference set of program data comprises information regarding a reference source... | Receiving a response from the applicant that includes information about a reference person, including their email address. | ¶12 | col. 16:4-10 |
| determining a reference class of the reference source based on the reference set of program data; | The complaint does not provide sufficient detail for analysis of this specific element beyond tracking the claim language. | ¶12 | col. 16:11-12 |
| selecting a reference set of electronic documents based on the reference class of the reference source; | The complaint does not provide sufficient detail for analysis of this specific element beyond tracking the claim language. | ¶12 | col. 16:13-15 |
| transmitting a reference hyperlink to the reference email address, the reference hyperlink for viewing the reference set of electronic documents; | Transmitting a hyperlink via email to the reference person, allowing them to view a set of documents. | ¶12 | col. 16:16-19 |
| receiving a reference electronic response to the reference set of electronic documents from the reference source; | Receiving an electronic response from the reference person. | ¶12 | col. 16:20-22 |
| storing the reference electronic response in the system memory, associating the reference electronic response with the new applicant entry; and | Storing the reference person's response in the system and linking it to the applicant's file. | ¶12 | col. 16:23-26 |
| generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address. | The complaint does not provide sufficient detail for analysis of this specific element beyond tracking the claim language. | ¶12 | col. 16:27-30 |
- Identified Points of Contention:
- Technical Questions: The complaint's infringement allegations track the language of Claim 1 without providing specific factual details or evidence (such as screenshots) of the Guardian Platform's operation. A central question will be whether the accused platform actually performs the specific, automated functions required by the claim, such as "determining a reference class" and then "selecting a reference set of electronic documents based on the reference class."
- Scope Questions: What evidence does the complaint provide that the Guardian Platform performs the final step of "generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address"? This limitation appears to map to the patent's "Address Locator" feature (col. 10:48-62), and the factual basis for whether the accused system includes such a specific automated function will be a key point of dispute.
V. Key Claim Terms for Construction
The Term: "reference class"
Context and Importance: This term is critical to the patent's narrative of an intelligent, automated system. Infringement may turn on whether the accused system automatically categorizes references (e.g., as an "employer" or "neighbor") and then selects specific forms based on that category, or if it uses a more generic, manual process. Practitioners may focus on this term because it appears to require a specific type of logic beyond simply collecting and sending forms.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to offer a formal definition, which a party could argue supports a plain and ordinary meaning covering any method of categorizing or grouping references.
- Evidence for a Narrower Interpretation: The specification provides specific examples of reference types, such as "relatives, employers, supervisors, co-workers, neighbors, and personal references" (col. 8:20-25) and "relative, former employer, or creditor" (col. 15:26-30). A party could argue that "reference class" is limited to these specific, pre-defined categories relevant to background checks.
The Term: "generating a suggested reference list of one or more law enforcement agencies"
Context and Importance: This limitation describes a specific, value-added function of the claimed system. The dispute will likely center on the degree of automation required to satisfy "generating a suggested list." If the accused system merely provides a blank field for an investigator to manually enter agencies, it may not infringe, whereas a system that automatically proposes agencies based on an address might.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that any system feature that assists an investigator in creating a list of agencies, even one requiring significant manual input, qualifies as "generating a suggested list."
- Evidence for a Narrower Interpretation: A party would likely point to the "Address Locator" feature described in the specification, which "will retrieve law enforcement and court names, addresses and phone numbers for a pre-defined radius around the applicant's past and current addresses" (col. 10:48-62). This suggests an automated, system-driven process is required to meet the claim limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges infringement through acts of inducement under 35 U.S.C. § 271(b) (Compl. ¶21). The factual support alleged is that the Defendant's use of the platform "acts as an endorsement to encourage other law enforcement agencies to also infringe" (Compl. ¶18). The complaint does not allege specific actions, such as distributing user manuals that instruct on infringing use.
- Willful Infringement: The complaint alleges that Defendant's infringement has been "willful and deliberate" based on the allegation that Defendants "had notice of the '188 Patent" (Compl. ¶11, ¶24). The complaint does not specify whether this alleged notice was pre-suit or post-suit, nor does it detail the circumstances of the notice.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical proof: Can Plaintiff produce evidence that the accused Guardian Platform performs the highly specific, sequential, and automated steps recited in Claim 1? The case may turn on a factual comparison between the platform's actual functionality and claim limitations such as "determining a reference class" and "generating a suggested reference list."
- The case will also involve a core question of claim scope: Does the term "generating a suggested reference list", in the context of the patent, require an automated, system-driven function that retrieves and proposes agencies, as described in the specification’s "Address Locator" feature, or can it be read more broadly to cover a system that simply facilitates manual entry by an investigator?
- An early evidentiary question will be the basis for the willfulness allegation. The discovery process will likely focus on when and how Defendant allegedly received "notice" of the ’188 Patent, as this fact is pivotal for Plaintiff’s claim for enhanced damages.